Patent practitioners are well aware of the importance of a thorough written description under 35 USC Section 112. However, when it comes to AI inventions, ensuring that all aspects of an algorithm are sufficiently described can be particularly critical. A recent PTAB decision involving Microsoft’s attempt to patent certain AI algorithms for LinkedIn serves as a valuable case study. The invention in question (Appeal 2023-000931, Application 15/215,251) relates to techniques for performing skill-based recommendations of events to users. Claim 1 is reproduced below with limitations at issue bolde ..read more

Patent practitioners frequently encounter USPTO rejections during the prosecution of patent applications based on the idea that the "rearrangement of parts" is obvious. This rule, found in MPEP Section 2144.VI, is often referenced to suggest that merely rearranging parts found in the prior art is an obvious design choice and therefore unpatentable. However, the application of this doctrine is not as straightforward as it might seem, and a recent case at the Patent Trial and Appeal Board (PTAB) sheds light on its nuanced application. MPEP 2144.VI(C) Rearrangement of Parts: In re Japikse, 181 F ..read more

Patent practitioners frequently encounter unique challenges when attempting to protect accessory inventions used by end consumers in conjunction with other products. These inventions, sold separately from the primary products they enhance, present a complex scenario for patent protection. On particular difficulty lies in claiming the accessory in a way that highlights its innovative features while avoiding the pitfalls of divided infringement and intended use claim elements. A recent case involving ZAGG, a company known for its protective cases that include keyboards, brings these challenges t ..read more

Patent examiners often cite a motivation to combine references when rejecting claims under 35 USC Section 103. When an examiner expressly cites motivation that is gleaned only from the applicant’s disclosure, then the examiner uses improper hindsight. But when an examiner creates another reason, albeit most likely using hindsight reasoning, the issue may be better characterized as improper motivation since there is no express reliance on information only from the applicant’s disclosure. A recent PTAB case illustrates the situation. The case is Appeal 2023-002022, Application 16/302,254. The in ..read more

Examining patent claims is a difficult job requiring an unnatural ability to consider abstracted features beyond the embodiments described in an application. The difficult only multiplies when complex science and technology are involved. Patent examiners must master this skill, but also master how far of an abstraction is reasonable. To illustrate this not so simple struggle, a recent case before the PTAB is helpful. The invention relates to an electrode assembly for use in an electrosurgery pencil. Claim 1 on appeal is reproduced below (Appeal 2023-002089 Application 14/698,403): 1. An elect ..read more

When drafting an appeal brief for ex parte appeals at the USPTO, one of the primary guidelines the USPTO emphasizes is to present only the strongest arguments. See the link (here), where the Office presents their top practice tips. Three of these deal with this issue (reproduced below): Present only the strongest arguments. Do not dilute strong arguments by including weaker arguments or arguments that have no bearing on the issues in the case. Give careful thought to which claims you choose to argue separately so that weaker arguments do not dilute stronger arguments. This advice aims ..read more

Eight references were combined to reject this slick process for serving up prepackaged ice-cold beverages with ice already in the bottle. According to their website, the applicant Kukki Cocktail (www.kukkicocktail.com/) markets unique “long-lasting cold and less watery cocktails” where the ice “stays frozen for well over half an hour, no matter how sunny the summer day.” With summer approaching, the appeal is clear. The case is appeal 2024-000660, application 16/063,918. Claim 1 on appeal is reproduced below (emphasis added for the primarily disputed limitation on appeal). For context, the in ..read more

In patent applications reciting a controller configured to carry out certain processing steps, there is substantial variation on whether, and to what extent, the claimed processing steps should be given patentable weight by US examiners during prosecution. See our previous post here. There are different ways in which examiners can try to avoid having to find prior art to apply to the claimed processing steps in the above claim structure. A first out is for the examiner to assert that the prior art structure is capable of performing the same function recited in the claim. Here, the examiner may ..read more

I never had any idea what a music producer’s job was, but the title sounded pretty cool. Here is how one website describes the job: Essentially, the music producer oversees all aspects of the creation of a song or album. These can include choice of song, choice of musicians, instruments and vocalist(s) and how those instruments are played and those notes sung as well as where the song or album is recorded. Like a director is to a film, the music producer is to a song. When people ask what a patent professional actually does, sometimes it sounds a lot like being a mere scrivener… or maybe som ..read more

Examiners can sometimes make rejections that blend together different rationales. This can be troublesome for multiple reasons. First, it can be confusing to applicants as they are unsure of the actual basis for the rejection, which in turn forces the applicant to make guesses while addressing multiple different legal rationales simultaneously. Second, it leaves the record unclear for the public in understanding how, if at all, the applicant’s arguments may affect ultimate claim scope, such as via prosecution history estoppel. Here, we see an example for an innovation in footwear from Under Ar ..read more